I got this story in my inbox — that United Airlines was trying to bully a website that is dedicated to complaining about United Airlines – Untied.com.

United Continental Holdings has sued a Canadian professor who maintains the 15-year-old complaint website Untied.com, which airs complaints from disgruntled United Airlines passengers and employees.

Two suits filed in Canadian courts allege the complaint site violates the airline’s copyright and trademarks. It also alleges the site violates the privacy of senior airline employees by posting contact information for those employees.

Reading that, I got all ready to write a post about what assholes United and its lawyers must be. Imagine my disappointment when I didn’t really get to do that.

The article continues:

United said it is not trying to prevent the site’s owner, Jeremy Cooperstock, from operating a website where people can express their views about United, but instead is trying to protect its intellectual property, such as its logo, and trying to alleviate confusion by United customers who might think they are filing a complaint with the airline on Untied.com.

“We are not requesting the website be shut down,” said United spokeswoman Megan McCarthy.

It was only after an April redesign of Cooperstock’s site, which made it look more like the new United.com, that the airline asked him to modify his site so customers would not be confused, she said, adding that the move was to protect customers and that the airline tried to resolve the matter without going to court.

It looks like United is not concerned about the content on the site, but how it is delivered. The site does look a lot like United’s. There are disclaimers everywhere, but I still don’t see United’s position being all that unreasonable. Yes, almost any idiot should be able to figure out that they are not really at United’s website. On the other hand, the fact that “untied” is a pretty common typo for “united,” coupled with the similarity in look-and-feel, makes United Airlines’ position a lot more reasonable.

If all they are asking is that the gripe site change some site design elements, this does not raise my hackles.

UPDATE: Since the site untied.com seems to have been taken down, here is a side-by-side comparison of the Untied.com and United.com websites.

Some out there, who don’t really understand trademark law, seem to believe that disclaimers on the Untied.com site mean that nobody would be confused by the mock United site. Others say that only a “moron in a hurry” could be confused by the two. I think that such opinions are ill-informed, and the product of the same instincts that I have — a knee-jerk reaction to start off on the side of the little guy against the big corporation; to immediately (without analysis) think that any attack on a critic’s site is an attack on free speech.

I look at these kinds of cases with a rebuttable presumption that the big bad corporation is the bad guy. That presumption, in this case, seems to be rebutted.

The first rebuttal comes from the information that United let the site go for 15 years, and only complained when the gripe site changed its site design. Historical screen captures show that the site didn’t used to look like that.

The second rebuttal comes from this: “Cooperstock offered to work for United as a paid consultant advising the airline on how to improve customer service. United declined.” If that is true, it is not entirely dispositive. Nevertheless, it does skew the optics of the situation a little. I would be interested to see Cooperstock’s response to that.

The third one comes from Canadian trademark law. Cooperstock is Canadian, and the case was filed in Canada. Mattel, Inc. v. 3894207 Canada Inc., 2006 SCC 22, [2006] 1 SCR 772 gives us some instruction. In that case, the Canadian Supreme Court held that a court should measure the “likelihood of a mistaken inference” from the perspective of the “ordinary hurried purchaser.” The court considered the “ordinary hurried purchaser” to lie somewhere between the “moron in a hurry,” and the “careful and diligent purchaser.” The court relied upon Delisle Foods Ltd. v. Anna Beth Holdings Ltd. reflex, (1992), 45 C.P.R. (3d) 535 (T.M.O.B.), whic stated at pp. 538-39:

When assessing the issue of confusion, the trade marks at issue must be considered from the point of view of the average hurried consumer having an imperfect recollection of the opponent’s mark who might encounter the trade mark of the applicant in association with the applicant’s wares in the market-place.

As Cattanach J. explained in Canadian Schenley Distilleries, at p. 5:

That does not mean a rash, careless or unobservant purchaser on the one hand, nor on the other does it mean a person of higher education, one possessed of expert qualifications. It is the probability of the average person endowed with average intelligence acting with ordinary caution being deceived that is the criterion and to measure that probability of confusion the Registrar of Trade Marks or the Judge must assess the normal attitudes and reactions of such persons.

When we consider the issue of “initial interest confusion,” I think that Mr. Cooperstock has some problems. In fact, it seems to be a testament to United’s patience that they did not go after the Untied.com domain name a long time ago.

When looking at this, it is important to understand that there are two types of people who will be dissuaded from doing business with United: The first group are people who read the message on Untied.com, which boils down to “United sucks.” If Cooperstock convinces you of that fact, then that is the marketplace of ideas in action. That is Mr. Cooperstock providing a valuable service, and properly exercising his right to free expression.

On the other hand, there is a second group — a group that comes to the website through mistake, who lingers just a little bit, and by the numbers, a portion of them move on to other websites.

You see, the issue of consumer confusion is not resolved with the simpleton analysis of “nobody would buy a plane ticket from untied.com.” The issue is that more than a few consumers will type “untied” instead of “united” every day — just through the likelihood of that common typographical error occurring. If you are an “ordinary hurried purchaser,” you may get to that site, even with a popup disclaimer, and spend a few minutes there before you realize that you are not, in fact, at United.com.

What do you do then?

Most people would then do what they could to find the right website. But, it wouldn’t take a genius to realize that a certain percentage of people, who might otherwise have bought a ticket, will put it off, or not buy at all, just because the impulse passes. Another percentage may have sought out United.com, just for information, who then lose interest. Remember, a business’ website is not merely a place to purchase tickets. It is a valuable segment in its branding strategy. The pop-up and disclaimers are of little value, given that the average consumer isn’t likely to read the pop up or the disclaimers. When it comes to initial interest confusion on the Internet, even a few seconds’ long detour will cause some harm to the mark owner.

The fact is, a certain number of United’s consumers suffer inconvenience due to the site, and independent of the message on the site, they are driven away from doing business with the airline.

Were I judging this case, I’d say that Cooperstock has every right to say every last thing he says on his website. But, I think his choice of domain, and his attempt to make the site look and feel like United.com, both crossed the line. I think it went even further if United asked him, pre-suit, to simply make some design changes, and he refused. It goes over the cliff if United’s claim that Cooperstock offered to provide his “customer relations services” for a fee.

Sorry guys, I love the little guy as much as anyone else. I never fly United either, mostly because their website is a nightmare to navigate, and I haven’t thought too highly of their customer service either. But, sometimes the little guy is out of bounds.

Virgin Group Chairman Richard Branson filed a UDRP complaint against Sean Truman, who, according to the decision, is not in the adult entertainment industry, but instead says he registered the domain name as a “souvenir” of his “admiration” for Branson. Truman also said he had no intention to host a website at the domain. Indeed, the webpage was blank when the complaint was filed, with the exception of ads placed by GoDaddy.com.

The National Arbitration Forum concluded that the domain was registered in bad faith and transferred the domain name to Branson. Once transferred, the site apparently will no longer display a web page. Looks like the Virgin name will remain, like most other self-proclaimed virgins, outwardly pristine.

Catching up on the backlog of interesting stuff I couldn’t address during bar prep, Red Bull lost the UDRP proceeding seeking the transfer of domain names that an Austrian court ruled belonged to Red Bull.

In 2003, Red Bull held the Taurus Rubens, an air festival/art show that hopefully had more professional participation than its Flugtag events across America. Anticipating that the event would become an annual one, Reinhard Birnhuber registered the domains taurusrubens.com and rubenstaurus.com among others. When Red Bull discovered this, it offered Birnhuber € 500. Birnhuber demanded one million euros.

In April 2005, Red Bull registered its Taurus Rubens as an Austrian trademark and commenced a UDRP proceeding against Birnhuber before the WIPO. Red Bull lost. Though the decision, Red Bull GmbH v. Reinhard Birnhuber D2005-0862, noted that Birnhuber’s registration of the marks was probably in bad faith – Birnhuber owned several other Red Bull-related domain names – Red Bull had no standing under the UDRP rules. Because Red Bull had registered the Taurus Rubens trademark years after Birnhuber registered the relevant domains, the company had no right to appear before WIPO and its complaint was dismissed.

Red Bull then filed suit in an Austrian commercial court, winning against Birnhuber. Birnhuber, who was found to have registered the domains in bad faith, appealed the lower court’s decision, but again lost. With final judgment in its hands, a speedy transfer of domain names pursuant to the court’s order seemed all but certain for Red Bull. Indeed, any rational person would agree.

Birnhuber balked at transferring the domains to Red Bull, and the company initiated a second UDRP proceeding in 2009, D2009-1598. Red Bull lost. The WIPO panel held that the Austrian court’s determinations were of no merit or relevance in the case, and the panel’s own determinations should stand as the final judgment. With a few pages of paper, the WIPO arbitrators blinked several years of legal proceedings and costs out of existence. Why would WIPO want courts horning in on its (very good) gig? By excluding them, WIPO can have full control over the UDRP parallel universe. From Google Translate, the opinion has this to say:

The panel can see in the above circumstances, no new facts or actions that would warrant a new assessment of the case. In this respect, the complainant fails to recognize that not only “new actions” to the resumption of proceedings are necessary, but this also has to be relevant.

The correct legal result is more than the enforcement of that ruling in Austria, especially as the present legal request (transfer of the domain name) covers with the sentencing order of the Austrian court. Since both parties are domiciled in Austria, is likely a priori, no specific enforcement problems arise. WIPO panels can so far do not replace the state authorities.

A cold, expensive reminder that the bare right to something does not translate to its possession, especially on the internet.

Red Bull’s lawyers dun’ goof’d by apparently ignoring common law trademark rights, which are recognized by the UDRP. In BMEzine.com LLC v. Gregory Ricks / Gee Whiz Domains Privacy Service, D2008-0882, a dispute handled by Randazza, BMEzine.com LLC (“BME”) argued that it had been using the mark BME in its line of business for 14 years before the dispute arose, and it had become distinct and famous within the body modification industry as a result. Respondent, Ricks, was found to have registered the bme.com domain in bad faith because of BME’s continuous use of the mark, making Ricks’ use of bme.com confusingly similar to BME’s mark. Accordingly, the panel ordered Ricks to transfer the bme.com domain to BME. If this approach had been effectively used in the Red Bull cases, it could have resulted in different panel holdings and circumvented years of litigation in Austrian courts.

In my experience, the doozie arguments in UDRP cases usually come from Respondents. But, this Complainant takes an honorable mention in the hall of fame of stupid domain name arbitration maneuvers.

In Mathiesen S.A.C. v. Allan Mathiesen, WIPO Case No. D2009-0087, the Complainant had legitimate Chilean trademark registrations for MATHIESEN, and the domain name in question was http://www.mathiesen.com. However, the Chilean registrations were granted in 2005, and the domain name appears to have been held by the same owner, Allan Mathiesen, since 1999.

There are potential exceptions, but it is generally accepted that under paragraph 4(a)(ii) of the UDRP, a party has a right to and/or a legitimate interest in a domain name when it corresponds to his actual legal name. See, e.g., G. A. Modefine S.A. v. A.R. Mani, Case No. D2001-0537 (A gentleman by the name of “A.R. Mani” registered armani.com and prevailed against Giorgio Armani on this basis).

I must wonder how the complainant’s attorney could have drafted the complaint and not at least dealt with the fact that the domain name and the respondent’s surname were the same. I have seen respondents come up with post-hoc “name changes” or claim that their “nickname” corresponds to the domain name. Accordingly, the complainant could have at least challenged the presumption that the WHOIS information was accurate – but they apparently didn’t bother to do so.

The panel found that this was an abuse of the arbitration process, and rightfully so.

A heartening factor in this case is that the panelist, Jeffrey D. Steinhardt, bothered to do some independent research, and reviewed the relevant web page and its online archives to see how the domain name had been used since its registration in 1999. UDRP Panelists certainly have the power to do so, and I believe that they have a responsibility to do so. Douglas Isenberg embraces this principle, but precious few others seem to do so.

The moral of the story: as a complainant’s attorney, you have to do some work. As a Panelist, you really ought to.

The majority of the Panel also finds that the use of a privacy shield in this case further supports its finding of bad faith registration. Although privacy shields might be legitimate in some cases – such as protecting the identity of a critic against reprisal – it is difficult to see why a PPC advertiser needs to protect its identity except to frustrate the purposes of the Policy or make it difficult for a brand owner to protect its trademarks against infringement, dilution and cybersquatting. In circumstances like this, the privacy shield may also allow registrants to transfer domain name registrations amongst themselves without any public record that there has been a transfer, thus allowing them to evade enforcement of legitimate third-party rights or to obstruct proceedings commenced under the Policy (see Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647, which held that use of privacy shield can be “treated as evidence of bad faith . . . when serial registrants use privacy shields to mask each registrant’s actual date of registration”). Such use defies the Policy’s overriding objectives to preserve accountability for unlawful acts on the Internet and to curb the abusive registration of domain names and cybersquatting (see, e.g., Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696; HSBC Finance Corporation v. Clear Blue Sky Inc., WIPO Case No. D2007-0062).

Despite the clear perjury and apparent bad faith, panelist David Sorkin dissented. No big surprise there given the hundreds of thousands of dollars he has made by being selected by respondents as one of their panelists-of-choice.

Aspis is a registered trademark of a Swedish company. However, it is also refers to Aspis Pronoia, a Greek insurance company. Interestingly enough, the Swedish Aspis is the successor in interest to the Greek company. Back in 1998, Aspis Pronoia ticked off Mr. Dimitri Kukurinis, and he registered aspis.com to vent his frustration with the company. The Swedish successor corporation filed a UDRP action. See Aspis Liv Försäkrings AB v. Neon Network, LLC, Case No. D2008-0387.

The panel found that:

Mr. Kukurinis [the registrant] is a resident of New York and at all material times has used the Domain Name to host a criticism site. The site contains text in both Greek and English and criticises stock investment advice that Mr. Kukurinis claims to have received from Aspis Pronia and, in particular, one Mr. Kosta Karavasilis of Aspis Pronia.

Nevertheless, two of the three UDRP panelists found that this was not a legitimate use of the domain name and that it was both registered and used in bad faith. More surprisingly, they seemed to suggest that criticism sites were, per se, not legitimate uses of domain names.Read the rest of this entry »